Law firm has standing to bring invalidity action on absolute grounds

European Union

In Lancôme Parfums et Beauté & Cie SNC v Office for Harmonization in the Internal Market (OHIM) (Case T-160/07, July 8 2008), the Court of First Instance (CFI) has held that CMS Hasche Sigle, a law firm, was entitled to file an application for a declaration that the mark COLOR EDITION was invalid.

Lancôme Parfums et Beauté & Cie SNC owned the Community trademark COLOR EDITION for cosmetics and make up in Class 3 of the Nice Classification. An application was subsequently filed by a law firm (the Cologne office of Norton Rose Vieregge, which merged into CMS Hasche Sigle during the OHIM proceedings) for the cancellation of the mark. The Cancellation Division of OHIM dismissed the application. On appeal, the Second Board of Appeal of OHIM held that COLOR EDITION was descriptive of the goods under Article 7(1)(c) of the Community Trademark Regulation (40/94) and was consequently devoid of distinctive character under Article 7(1)(b).
Lancôme appealed to the CFI under Articles 55(1)(a) and 7(1)(b) and (c) of the regulation.
Lancôme argued that, under Article 55(1)(a), the law firm was not entitled to file an application for a declaration of invalidity since it was not directly, individually and personally affected by the registration of the mark. Lancôme admitted that Article 55(1)(a) does not explicitly provide for a requirement of legal interest. However, Lancôme argued that, under Article 79, the board should have relied on the general principles applicable in the member states.
The CFI established that Article 55(1)(a) makes no reference to a requirement of legal interest and that an application for a declaration of invalidity may be filed by a broad range of applicants. Therefore, there was no room for the application of Article 79. The CFI relied on the wording of Article 55(1)(a), which reads as follows: 
"An application for revocation of the rights of the proprietor of a Community trademark or for a declaration that the trademark is invalid may be submitted to the office [...] by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers which, under the terms of the law governing it, has the capacity in its own name to sue and be sued."
Moreover, the CFI pointed out that Subparagraphs (a) and (b) of Article 55(1) make a distinction between applications for declarations of invalidity based on absolute grounds and those based on relative grounds. The CFI highlighted the fact that applications for declarations of invalidity based on absolute grounds serve the general interest and must thus be open to a wide range of applicants.
The CFI then turned to the assessment of the distinctive character of the mark under Article 7(1)(c) of the regulation. The CFI confirmed prior case law (see PAPERLAB (Case T-19/04) and EUROPIG (Case T-207/06)) establishing that Article 7(1)(c) applies where there is a sufficiently direct and specific relationship between the sign and the goods to enable the relevant public, without further thought, to perceive immediately the sign as a description of the kind or characteristics of the goods. The CFI recalled that a combination mark consisting of several descriptive elements is in itself descriptive, unless there is a perceptible difference between the combination and the mere sum of its parts. Therefore, the combination must be unusual with regard to the relevant goods and create an impression other than the descriptive impression conveyed by the sum of the descriptive parts.
The CFI concluded that the mark COLOR EDITION did not meet these requirements. It considered that the mark was descriptive of the goods at issue on the grounds that:
  • the word 'color' is often used in the cosmetics trade to indicate the purpose or characteristics of goods; and
  • the word 'edition' is used not only in publishing, but also to refer to a line of goods. 
Moreover, the CFI found that the combination of the words 'color' and 'edition' did not present an uncommon structure, as it followed English lexical rules. In addition, the impression created by the combination of the words was not sufficiently removed from that produced by the mere juxtaposition of the words. On the contrary, the combination merely referred to the characteristics of the goods (a line of cosmetics or make up in various colours), which the relevant public (ie, the average English-speaking consumer, reasonably well informed, observant and circumspect) could understand immediately and directly. Finally, the CFI dismissed Lancôme's argument that an intellectual effort would be required in order to understand the exact descriptive meaning of the mark COLOR EDITION.
Having established that the mark COLOR EDITION was descriptive under Article 7(1)(c), the CFI did not examine Lancôme's claim under Article 7(1)(b).
Tanya Meedom, Plesner, Copenhagen

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